- Mim Software Inc. v. Progenics Pharmaceuticals, Inc.Institution deniedPTAB · Oct 10, 2025 · IPR2025-00726 · APJ Annette R Reimers · IPR · Institution
The Board denied institution because the Petition did not adequately explain which of its three alternative constructions of “risk indices” applied to the asserted grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“review. 35 U.S.C. § 314(b) (2018); 37 C.F.R. § 42.4(a) (2024). An inter partes review may not be instituted “unless . . . the information presented in the petition . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). Upon consideration of the Petition and the evidence of record, we determine that Petitioner has not demonstrated a reasonable likelihood of success in proving that at least 1 claim of the ’141 patent is unpatentable. 1” slip op. at 2
- BurdenDenied
“risk index” differ in several “particular details,” but those details matter and can make a difference in our patentability analysis, especially given Petitioner’s acknowledgment that there is no well-established ordinary and customary meaning for the term. In taking this “choose-your-own-adventure” approach to claim construction, Petitioner fails to satisfy the requirements of 37 C.F.R. § 42.104(b)(3)–(4), which specify the content of the petition. In particular, Rule 42.104(b)(3) requires the petition to identify “[h]ow the challenged claim is to be construed,” while Rule 42.104(b)(4) requires the petition to identify “[h]ow the construed claim is unpatentable” under either 35 U.S.C. § 102 or § 103. Moreover, by proposing these “choose-your-own-adventure” constructions, Petitioner obfuscates which circumstances each proposed construction should be applied. The Board does not find that alternative claim constructions are per se improper. Nonetheless, there must be reasoning to explain the circumstances under which each alternative construction should be applied. For example, Petitioner may assert one construction on the basis that a claim term should be construed as a means-plus-function term under 35 U.S.C. § 112(f), but also propose an alternative construction to be applied if the term is not found to be a means-plus-function term. However, Petitioner does not provide any rationale here for including three alternative constructions. Rather, Petitioner indicates there is no well-established ordinary and customary meaning for the term(s), and incorrectly contends that the three alternative constructions are not significantly different without explaining why three different constructions are being proposed or under what circumstances one construction should be applied over the other two constructions. slip op. at 7
Discretionary denialPatents in suitUS 11,894,141 - Mim Software Inc. v. Progenics Pharmaceuticals, Inc.Institution deniedPTAB · Oct 8, 2025 · IPR2025-00725 · APJ Christopher G Paulraj · IPR · Institution
The Board denied institution because the Petition failed to explain how the challenged claims should be construed or how the prior art rendered them unpatentable under the proposed constructions.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied
“III.CONCLUSION For the foregoing reasons, we determine that the Petition fails to satisfy the requirement of 37 C.F.R. § 42.104(b) to set forth how the challenged claims are to be construed. Accordingly, we decline to institute an inter partes review. IV.ORDER In consideration of the foregoing, it is hereby: ORDERED that, pursuant to 35 U.S.C. § 314, the Petition for an inter partes review is denied and no inter partes review is instituted.” slip op. at 10
- BurdenDenied
“particular details,” but those details matter and can make a difference in our patentability analysis, especially given Petitioner’s acknowledgment that there is no well-established ordinary and customary meaning for the term. In taking this “choose-your-own-adventure” approach to claim construction, Petitioner fails to satisfy the requirements of 37 C.F.R. § 42.104(b)(3)–(4), which specify the content of the petition. In particular, Rule 42.104(b)(3) requires the petition to identify “[h]ow the challenged claim is to be construed,” while Rule 42.104(b)(4) requires the petition to identify “[h]ow the construed claim is unpatentable” under either 35 U.S.C. § 102 or § 103. Moreover, by proposing these “choose-your-own-adventure” constructions, Petitioner obfuscates which claim construction the Board is being asked to apply, and under what circumstances each proposed construction should be applied. To be sure, we do not find that alternative claim constructions are per se improper. Nonetheless, there must be reasoning to explain the circumstances under which each alternative construction should be applied or an explanation of how the prior art renders the claims unpatentable under alternative constructions. For instance, Petitioner may assert one construction on the basis that a claim term should be construed as a meansplus-function term under 35 U.S.C. § 112(f), but also propose an alternative construction to be applied if the term is not found to be a means-plus- any rationale here for including three alternative constructions. Instead, Petitioner indicates there is no well-established ordinary and customary meaning for the term, and incorrectly contends that the three alternative constructions are not significantly different without explaining why three different constructions are being proposed or under what circumstances one construction should be applied over the other two constructions. slip op. at 7
Discretionary denialPatents in suitUS 11,424,035 - Mim Software Inc. v. Progenics Pharmaceuticals, Inc.Institution deniedPTAB · Oct 8, 2025 · IPR2025-00630 · APJ Christopher G Paulraj · IPR · Institution
The Board denied institution because the Petition failed to explain which of three alternative constructions of “risk map” applied or how the prior art met the claims under those constructions.
RulingsInstitution decision- BurdenDenied
“particular details,” but those details matter and can make a difference in our patentability analysis, especially given that Petitioner acknowledges there is no well-established ordinary and customary meaning for the term. In taking this “choose-your-own-adventure” approach to claim construction, Petitioner fails to satisfy the requirements of 37 C.F.R. § 42.104(b)(3)–(4), which specify the content of the petition. In particular, Rule 42.104(b)(3) requires the petition to identify “[h]ow the challenged claim is to be construed,” while Rule 42.104(b)(4) requires the petition to identify “[h]ow the construed claim is unpatentable” under either 35 U.S.C. § 102 or § 103. Moreover, by proposing these “choose-your-own-adventure” constructions, Petitioner obfuscates which claim construction the Board is being asked to apply, and under what circumstances each proposed construction should be applied. To be sure, we do not find that alternative claim constructions are per se improper. Nonetheless, there must be reasoning to explain the circumstances under which each alternative construction should be applied or an explanation of how the prior art renders the claims unpatentable under alternative constructions. For instance, Petitioner may assert one construction on the basis that a claim term should be construed as a means- construction assuming the term is not found to be a means-plus-function term. Unlike this example, however, Petitioner does not provide any rationale here for including three alternative constructions. Instead, Petitioner indicates there is no well-established ordinary and customary meaning for the term, and summarily contends that the three alternative constructions are not significantly different without explaining why three different constructions are being proposed or under what circumstances one construction should be applied over the other two constructions. slip op. at 7
Discretionary denialPatents in suitUS 10,665,346 - Zimvie, Inc. / Zimmer Biomet Spine, Inc. v. Roger P. JacksonInstitution deniedPTAB · Feb 26, 2024 · IPR2023-01430 · APJ Ulrike W Jenks · IPR · Institution
The Board denied institution because Patent Owner statutorily disclaimed all challenged claims 1–22.
RulingsInstitution decision- Adverse judgmentAdverse judgmentDenied
“Patent Owner has disclaimed all claims of the ’479 patent and paid the requisite fees. See Ex. 2001; see also 37 C.F.R. § 1.321 (setting forth requirements for statutory disclaimer). Accordingly, we deny institution of the requested inter partes review. See 37 C.F.R. § 42.107(e) (“No inter partes review will be instituted based on disclaimed claims.”); see also General Elec. Co. v. United Techs. Corp., IPR2017-00491, Paper 9 (PTAB July 6, 2017) (precedential) (denying institution of inter partes review under rule 37 C.F.R. § 42.107(e) based on disclaimer) (“General Electric”). In the present instance, and consistent with Rule 42.107(e) and the Board’s precedential General Electric decision, we determine that a denial of 1 Petitioner has filed three additional inter partes review petitions against three related patents assigned to Patent Owner: IPR2023-01431 (U.S. Patent No. 10,548,641 B2), IPR2023-01432 (U.S. Patent No. 10,898,233 B2), and IPR2023-01433 (U.S. Patent No. 11,129,646 B2). Pet. 1. Petitioner additionally acknowledges that the’479 patent is subject to a pending lawsuit entitled Jackson v. ZimVie Inc., No. 1:22-cv-00891-RGA (D. Del. Filed June 30, 2022). Pet. 1. institution is sufficient to dispose of this case. Because the Board cannot institute trial on disclaimed claims and all the challenged claims have been disclaimed here, no inter partes review will be instituted.” slip op. at 2
Discretionary denialPatents in suitUS 8,911,479 - Fitbit, Inc. v. Philips North America LLCInstitution deniedPTAB · Oct 30, 2020 · IPR2020-00782 · APJ Frances L Ippolito · IPR · Institution
The Board denied institution because Philips had recorded a statutory disclaimer of all challenged claims 15–17.
RulingsInstitution decision- Adverse judgmentAdverse judgmentDenied
“Pursuant to 37 C.F.R. § 42.107(e), “[t]he patent owner may file a statutory disclaimer under 35 U.S.C. [§] 253(a) in compliance with § 1.321(a) of this chapter, disclaiming one or more claims in the patent. No inter partes review will be instituted based on disclaimed claims.” (Emphasis added.) A disclaimer under 35 U.S.C. § 253(a) shall be recorded in the Office, and is “considered as part of the original patent.” See 35 U.S.C. § 253(a).” slip op. at 5
Discretionary denialPatents in suitUS 6,976,958 - Facebook, Inc. / Instagram, LLC v. Skky LLCInstitution deniedPTAB · Jul 13, 2017 · IPR2017-00641 · APJ Christopher G Paulraj · IPR · Institution
The Board denied institution because the patent owner disclaimed all challenged claims.
RulingsInstitution decision- Adverse judgmentInstitution denied discretionary otherInstitution denied
“A patentee may “make disclaimer of any complete claim . . . . Such disclaimer shall be in writing, and recorded in the Patent and Trademark Office; and it shall thereafter be considered as part of the original patent.” 35 U.S.C. § 253(a). When a patent owner files a statutory disclaimer with its preliminary response, “[n]o inter partes review will be instituted based on disclaimed claims.” 37 C.F.R. § 42.107(e).” slip op. at 2
Discretionary denialPatents in suitUS 9,203,956 - Facebook, Inc. / Instagram, LLC v. Skky, LLCInstitution deniedPTAB · Apr 12, 2017 · CBM2017-00002 · APJ William V Saindon · CBM · Institution
The Board denied institution because claims 8 and 10–14 did not make the patent eligible for CBM review; claims 1–7 and 9 had been disclaimed.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“patent review “shall be regarded as, and shall employ the standards and procedures of, a post-grant review” with certain exceptions not relevant here. Under 35 U.S.C. § 324(a), a post-grant review cannot be “instituted unless the Director determines that the information presented in the petition. . . would demonstrate that it is more likely than not that at least 1 of the claims challenged in the petition is unpatentable.”” slip op. at 2
- Adverse judgmentAdverse judgmentOther
“Resp. 5 (citing Ex. 2001); Pet. Prelim. Reply (addressing the disclaimer); PO Sur-Reply (replying to Pet. Prelim. Reply). Patent Owner argues that for the purpose of determining whether or not to institute a CBM proceeding, the Board must treat disclaimed claims “as never having existed.” Prelim. Resp. 5–6 (citing Great West Cas. Co. v. Intellectual Ventures II LLC, Case CBM2015-00171, slip op. at 7 (PTAB Feb. 9, 2016) (Paper 10)).” slip op. at 8
Discretionary denialPatents in suitUS 9,203,870 - Sanofi-Aventis U.S. LLC / Sanofi-Aventis Deutschland GmbH v. Astrazeneca Pharmaceuticals LP And Amylin Pharmaceuticals, LLCInstitution deniedPTAB · Jun 28, 2016 · IPR2016-00348 · APJ Sheridan K Snedden · IPR · Institution
The Board denied institution on all challenged claims because the Petition did not identify a sufficiently clear combination of references or explain how they rendered the claims obvious.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Section 312 requires that a petition for inter partes review “identif[y], . . . with particularity, each claim challenged, the grounds on which the challenge to each claim is based, and the evidence that supports the grounds for the challenge to each claim.” 35 U.S.C. § 312 (a)(3). Furthermore, our rules require a petition for inter partes review to (i) identify “[t]he specific statutory grounds under 35 U.S.C. [§] 102 or 103 on which the challenge to the claim is based and the patents or printed publications relied upon for each ground”; (ii) identify “[h]ow [each] construed claim is unpatentable under the statutory grounds identified”; (iii) “specify where each element of the claim is found in the prior art patents or printed publications relied upon”; and (iv) identify “the relevance of the evidence to the challenge raised, including identifying specific portions of the evidence that support the challenge.” 37 C.F.R. § 42.104(b)(2), (4)–(5). Here, the Petition fails to explain sufficiently the specific combination of references it relies upon to satisfy these requirements.” slip op. at 5
- BurdenDenied
“Section 312 requires that a petition for inter partes review “identif[y], . . . with particularity, each claim challenged, the grounds on which the challenge to each claim is based, and the evidence that supports the grounds for the challenge to each claim.” 35 U.S.C. § 312 (a)(3). Furthermore, our rules require a petition for inter partes review to (i) identify “[t]he specific statutory grounds under 35 U.S.C. [§] 102 or 103 on which the challenge to the claim is based and the patents or printed publications relied upon for each ground”; (ii) identify “[h]ow [each] construed claim is unpatentable under the statutory grounds identified”; (iii) “specify where each element of the claim is found in the prior art patents or printed publications relied upon”; and (iv) identify “the relevance of the evidence to the challenge raised, including identifying specific portions of the evidence that support the challenge.” 37 C.F.R. § 42.104(b)(2), (4)–(5). Here, the Petition fails to explain sufficiently the specific combination of references it relies upon to satisfy these requirements.” slip op. at 5
Discretionary denialPatents in suitUS 7,297,761
Holdings, summaries, rulings, issues, outcomes, winners and claim constructions shown for a decision were generated by a large language model reading the opinion. They are a guide to the decision, not the decision. Confirm every one against the court's own text before relying on it. Outcomes read from the patent owner’s side. Party names are extracted from the decision and are missing on about 900 short Director denials and scans, which carry the trial number instead.